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A Primer on the European Community Trademark

Introduction

Trademarks used to be protected in Europe, for the most part, by registering them before the trademark office of each nation of interest. However, trademark registrations obtained under the national laws have sometimes been used as barriers to legitimate free trade within the European Union (EU). The free flow of goods and services between member states is one of the fundamental freedoms enshrined in the Treaty of Rome, which established the EU. Thus, certain steps were taken to harmonize the various trademark laws with the concept of free flow of goods and services. These steps include:

The harmonization of the national trademark laws of the member states, and

The establishment of the Community Trademark.

The national trademark laws were harmonized with each other and with the concept of the free flow of goods and services established by the Treaty of Rome by a “First Council Directive to Approximate the Laws of the Member States Relating to Trademarks.” This Directive harmonizes, but does not eliminate, the national trademark laws of the EU member states. It eliminates unequal treatment of trademark owners within the EU and harmonizes the law regarding the importation of grey market goods, i.e., imported goods initially introduced into commerce in another member state or outside the EU.

The Community Trademark was established by the European Council Directive No. 4094 of December 20, 1993. The Community Trademark provides a single registration covering all the member states of the EU. Community Trademark registrations exist alongside national trademark registrations and provide an alternative to national registration. The Office of Harmonization in the Internal Market, (“the Office”), as the EU trademark office is officially known, opened its doors for business on January 1, 1996.

Salient Features and Advantages of a Community Trademark

The more salient features of a Community Trademark according to the originally adopted Regulation (as subsequently amended in accordance with the GATT-TRIPS Agreement) are summarized below.

Single Registration Covers Twenty-Eight Countries

The principal advantage of obtaining a Community Trademark registration is that trademark owners may obtain and maintain a single registration covering all twenty-eight member states of the EU and do not need to secure and renew registrations in the individual member states. The present members of the EU are:

Particularly notable European countries that are not members, and are therefore not covered by the Community Trademark, are:

Norway

Switzerland

Classification of Goods and Services

The goods and services listed in a Community Trademark application are classified according to the International Classification of Goods and Services. Multi-class applications may be filed, but each class beyond the third class requires an additional class fee.

Applicants

Any natural or legal person may apply to register a Community Trademark.

Claiming Priority

A six-month right of priority may be claimed by an applicant based on their first application filed in a member country of the Paris Convention or the World Trade Organization Agreement.

Link with the Madrid Protocol

It is also possible for International registrations governed by the Madrid Protocol to designate the Community Trademark Office, as opposed to the individual member states of the European Union. In addition, it is possible for a Community Trademark to serve as the basis for an International registration under the Madrid Protocol.

Official Languages

Applications may be filed in any of the twenty-four EU official languages (Bulgarian, Croatian, Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Irish, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovene, Spanish, and Swedish), but the applicant must designate a second Office language (i.e., either English, French, German, Italian or Spanish) in which proceedings may be conducted. Ex officio proceedings will be conducted in the language of the application, although the Office may send written communications in the second language of the application if the application was filed in a non-Office language. Inter partes actions may be filed in any Office language, but proceedings will be conducted in the language in which the inter partes action documents were filed, provided that such language is also either the first or second language of the application. Otherwise, the inter partes proceedings will be conducted in the language of the application (or the second language of the application if the application was filed in a non-Office language). The opponents must then translate their documents into that language. Alternatively, the proceedings may be conducted in any official EU language to which the parties agree.

Claiming the Seniority of a Trademark Previously Registered in a Member Country

Owners of earlier national registrations who apply for a Community Trademark in respect of the identical goods or services covered by the national registrations may claim the seniority of the national registrations in the EU member states in which the mark is registered. Trademark owners may then, in most cases, allow their national registrations to lapse, since they will be considered to have the same rights as they would have had if the earlier national registrations had continued to be registered. Seniority may be claimed either at the time of filing or after registration of the Community Trademark.

Examination of Applications

Applications are examined by the Office as to form and inherent registrability. The Office will consider arguments based on acquired distinctiveness through use in reply to an inherent registrability objection.

Search Reports

The Office prepares a search report listing possible conflicting Community Trademark rights. At the time of filing, an applicant may pay an additional fee requesting that the participating national trademark offices of the EU Member States also issue search reports listing anticipatory references revealed on their own trademark registers. The Community Trademark search report, and if requested the national trademark search reports, are forwarded to the applicant for review, but no official objections can be based thereon. When the application is published for opposition, the Office will notify the owners of prior Community Trademark registrations listed in the search report, but the Office will not notify owners of earlier national rights. Accordingly, it is very important for owners of national rights to subscribe to a Watch Service in order to receive notice of potential conflicting Community Trademark applications.

Oppositions

Owners of earlier rights (including those listed below) may, within 3 months of the date of publication in the Official Gazette, file with the Office a notice of opposition against a Community Trademark application on the following grounds:

a) a prior Community Trademark application or registration; b) a prior EU national application or registration; c) a prior International Registration extended to a member state of the EU; d) a mark which is well-known, as defined in the Paris Convention, in an EU Member State; and e) unregistered marks in an EU Member State which, under that State’s law, can prohibit the use of a subsequent mark.

It should be noted that the losing party in an opposition will be required to pay a contribution to the winner’s costs on a fixed scale.

Appeals

Decisions of the Office may be appealed to one of the Boards of Appeal and a further appeal will be available to the European Court of Justice.

Converting an Application for a Community Trademark Registration into National Applications

The owner of a Community Trademark application or registration in respect of which a final decision of rejection is issued may, within 3 months of such decision, file with the Office a request, together with the appropriate fee, to convert the Community Trademark application or registration to individual EU national applications, retaining the priority date of the Community Trademark application. The Office will forward such requests to the national offices designated, which may elect to charge a conversion fee.

Term

A Community Trademark is registered for a period of 10 years from the date of filing and shall be renewable for additional 10-year periods.

Assignability and Licensing of Community Trademark Registrations

Community Trademark registrations may be assigned without the goodwill of the mark. Moreover, the licensing of and creation of security interests against such marks is recognized. Licenses, which may be granted in respect of some or all of the registered goods and in respect of the whole or part of the EU, and agreements affecting the title of a Community Trademark registration, must be recorded at the Office to be effective against third parties. Proprietary rights in a Community Trademark registration are governed by the national law of the EU member state where the proprietor has a seat, domicile or establishment. If the proprietor has no seat, domicile or establishment in an EU member state, proprietary rights are governed by the law of the country where the Office is located, namely, by Spanish law.

Use Requirements

A Community Trademark registration may be vulnerable to attack in a proceeding before the Office if the registered mark is not used, without justification, for any period of 5 years from the date of registration. Subsequent use will cure the defect, unless such use was resumed within 3 months of the filing date of the cancellation action and the registrant was aware of the possible attack. Use of a Community Trademark in any one EU member country will usually be sufficient to satisfy the use requirement for all EU member countries if the use is substantial and in one of the major countries. Use of a mark on goods only for export constitutes valid use.

Courts Hearing Trademark Disputes Involving Community Registrations

Each member country has designated the court(s) in its territory which has competence to hear Community Trademark disputes. Actions for infringement of a Community Trademark registration may be brought before the designated national Community Trademark courts. The proper venue for such actions will be the member country in which the infringement occurred, or, in the following order:

a) the EU defendants’ country of domicile, b) the EU defendants’ country of establishment, c) the EU plaintiff’s country of domicile, d) the EU plaintiff’s country of establishment, and e) Spain (home of the Office),

unless the parties agree that a different designated Community Trademark national court shall have jurisdiction or the defendant enters an appearance in a designated Community Trademark national court. The proceedings will be governed by the laws of the country where the suit is instituted.

Conclusion

The Community Trademark has had a significant impact on trademark protection in Europe. The cost advantage of filing a single application to protect a trademark throughout the Economic Community has weighed tremendously in its favor. The disadvantages of utilizing a Community Registration are primarily that (i) the Community Trademark registration process takes longer than some national registration processes and (ii) the Community Trademark Office decisions on registrability can be more stringent than many of the national trademark offices. One disadvantage, so far as third parties are concerned, is that Community Trademark applications are not rejected on the basis of prior national or Community Trademark registrations. Thus, a Trademark Watch Service is a valuable service for owners of prior national rights so that they may oppose Community Trademark Applications when it is appropriate to do so.